World Trademark Review Issue 61

The WTR Industry Awards 2016 – to be presented at an exclusive ceremony at the Hilton Orlando Bonnet Creek, timed to coincide with the 138th International Trademark Association annual meeting – honour leading trademark teams and individuals across a range of sectors. We reveal the shortlist

Features

While corporate trademark counsel continue to struggle with budget cuts and freezes, their counterparts in private practice are reporting increased workloads, revenues and positivity. Although this may at first seem counterintuitive, it stems from the symbiotic relationship between the two Tim Lince and Trevor Little

World trends are driving global brand protection and brand integrity needs, but purely legal remedies are often insufficient. Instead, an integrated approach that utilises the right balance of legal elements, coupled with modern brand protection technology, is key Richard P Gill

A well-functioning international licensing programme can help a brand to expand into new categories and territories, adapting to new trends and a changing marketplace. However, setting up such a programme takes hard work and ongoing care Oliver Herzfeld

China’s licensing landscape has evolved at breakneck speed in the past few years. Brand owners should keep on top of the latest developments to help them get the best deal they can and keep their trademark rights secure Jack Ellis

While many issues remain unsettled in the new gTLD programme, after two years of the first round there are valuable lessons that brand owners can learn and apply going forward Vincent D’Angelo and Gretchen Olive

Originally developed to target internet service providers hosting websites with pirated content, website blocking orders have occasionally been applied to websites selling counterfeit goods. Could they be a powerful new weapon for brand owners? Ann Ford, Ulrike Grübler and Melinda Upton

Preliminary injunctions can be a valuable tool for rights holders, but they are not always straightforward to obtain. Lawyers from Hogan Lovells provide a comparative global overview of strategies for obtaining them in different jurisdictions

The question of what constitutes an appropriate target for ridicule is, by nature, subjective. However, imitating a trademark for the purposes of humour or commentary may cross the line into an abridgement of proprietary rights Maureen C Kassner and Laura A Genovese

A long-term enforcement strategy is a must for rights holders doing business in China. Without one, they can find themselves overspending or underspending, or overwhelmed by requests for instructions or simply the sheer magnitude of actions in China Spring Chang and Kenneth L Ng

From caravans, cars and fashion magazines to whiskey, wine and tobacco, 2015 was a year of diverse trademark cases in Australia, including key decisions from the Federal Court and the Australian Trademarks Office Miriam Stiel, Lena Balakrishnan and Kaelah Ford

A fashion company has secured a landmark victory along with significant damages from the Beijing IP Court. The win breaks new ground in China and shows that courts are not afraid to apply the new Trademark Law Eugene Low, Deanna Wong and Zhen Feng

Recent decisions and developments illustrate how the Indian legal regime is exploring unchartered territory as it seeks to accommodate the interests of domestic and international rights holders Mohan Dewan and Disha Dewan

In 2005 amendments to the Mexican Industrial Property Law designed a procedure for declaring the well-known character of a mark. A recent judicial precedent contributes to the understanding of how these amendments have been interpreted Gloria Niembro and Eduardo Castañeda

A number of important decisions were handed down in 2015. A key theme for the year – and one that is yet to be resolved – was the constitutional debate regarding the Section 2(a) ban on disparaging trademarks Roberta Jacobs-Meadway

As the country awaits sweeping amendments to the Trademarks Act, the courts were kept busy with decisions covering relief against non-parties, metatags, cancellation proceedings and the exemption for recognised trademarks under the Charter of the French Language in Quebec Province Robert A MacDonald and Matthew Boyd

Columns

A recent Federal Court of Appeal decision illustrates the inherent difficulty in registering a trademark which is descriptive, either of goods or services, or of a geographical location where the goods or services originated Antonio Turco

As Iran emerges from a long spell of international sanctions, international brands are considering expanding into the country. However, an understanding of local nuances is critical to successful market entry Safdar Jafri

Vilau I Associates
Reflecting the current trend towards the use of less conventional signs, the Romanian Patent and Trademark Office is open to the registration of non-traditional marks – with certain caveats

Kenaroglu Intellectual Property
Turkey affords substantial protection to 3D, colour, motion and sound marks, but has a long way to go to grant comprehensive protection to taste, smell and texture marks